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Author Topic: Question concerning introductory phrase of an independent claim  (Read 1011 times)

LawStudent2011

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When you're drafting an independent claim, can you state the following:

An appartus that provides X and Y comprising:


In this instance, X and Y represent two things the apparatus accomplishes with respect to the present invention.


In other words, can you state two things the apparatus accomplishes in the introductory phrase?
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JimIvey

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In other words, can you state two things the apparatus accomplishes in the introductory phrase?

Yes, you can.  Whether you ought to is a different question.

Regards.
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khazzah

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In other words, can you state two things the apparatus accomplishes in the introductory phrase?

Yes, you can.  Whether you ought to is a different question.

I agree wholeheartedly with Jim. And I'll go further and state that I see lots of downside to doing so, and very little upside.

But before I go further, I want to throw it back into LawStudent's court ...

LawStudent, what do you hope to accomplish by reciting results X and Y in the preamble of the claim?
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Karen Hazzah
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LawStudent2011

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My claim is for a system which acommplishes X and Y. Would it be more appropriate to just have two independent claims? For example,

Claim 1
A system for X, comprising:


Claim 2

A system for Y, comprising:


Thanks
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khazzah

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My claim is for a system which accomplishes X and Y. Would it be more appropriate to just have two independent claims? For example,

Claim 1 - A system for X, comprising:
Claim 2 - A system for Y, comprising:

You want to claim the minimal set of features that distinguishes over the prior art. If X is an independently patentable feature, then you want a claim to X only. Same for Y.

But X appears to be a result rather than a feature. So a better example would be

Quote
Claim 1 - A system comprising: A; and B.
Claim 2 - A system comprising: B; and C.

If A and B are patentable without C, and B and C are patentable without A, then you want the above two claims as compared to
Quote
Single claim - A system comprising: A; B; and C

 
You didn't answer my original question. What do you hope to accomplish by reciting the result in the preamble?
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Karen Hazzah
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Information provided in this post is not legal advice and does not create any attorney-client relationship.

JimIvey

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There's no requirement to put an objective or accomplishment of a system in the preamble or anywhere else in the claim. 

How about "A system comprising:"?

In writing claims, you should consider each and every word in the claim and ask yourself if the claim should cover things that don't do what that word describes. 

So, let's consider "A system for juicing oranges, the system comprising:"  (incidentally, notice "the system comprising" -- just "comprising", which would technically apply to nearer applicable noun, "oranges", and not the system).

If you want lemon juicers to infringe too, you might change "oranges" to "citrus".  But suppose it could juice apples, pears, watermelon, etc.  So, change "citrus" to "fruit".  But suppose it could juice tomatoes.  Yeah, technically, a tomato is a fruit (the ovaries of plants -- i.e., can have seeds), so you might get away with pointing that out in the spec.  How about crushing and extracting sugar from cane or pressing olives to make olive oil?  Oh, wait, olives are technically fruit (as ovaries), but cane certainly isn't a fruit.  Okay, so change it to something pressing liquid from plant material.  Does that cover pressing oil from cotton rags?  Probably, since cotton is a plant material.  How about synthetic rags?  Probably not.

You know what obviates all that?  "A system comprising:".  There ya go.

Regards.
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James D. Ivey
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